Posts Tagged: Federal Circuit Review


CAFC denies Amgen discovery in biosimilar patent dispute

In a patent infringement case governed by the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”), the Federal Circuit found that it lacked jurisdiction to compel discovery …

Federal Circuit says non-profit EFF has standing in IPR appeal

In an IPR brought by Electronic Frontier Foundation (EFF), Personal Audio appealed a Board determination that invalidated its patent for storing and distributing episodic media files. Personal …

Where parties dispute proper scope of claims, Board must provide an explicit claim construction

The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed... When parties dispute the proper …

Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s …

Federal Circuit returns dispute over Dale Earnhardt trademark rights back to USPTO

The Federal Circuit heard the case of Earnhardt v. Kerry Earnhardt, Inc., where Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of …

Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required

A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not …

Causal-nexus for a permanent injunction only requires ‘some connection’ to infringement

The district court denied a request for a permanent injunction against Metaswitch after a jury found infringement because Genband failed to establish irreparable harm. More specifically, the …

CAFC Reverses and Remands Attorney’s Fees Issue in Newegg’s Favor

The district court made clearly erroneous factual findings that independently supported reversal. Particularly, the record supported a finding that this case was exceptional given the weakness of …

PTAB’s Claim Construction Regarding Means-Plus-Function Limitation Was Erroneous

The Federal Circuit vacated and remanded the Board’s finding of obviousness of certain challenged claims based on a means-plus-function limitation, affirmed the Board’s finding of …

Federal Circuit Vacates Board’s Lack of Written Description Holdings in Interferences

The Federal Circuit vacated three interference decisions, in which the Board found that Stanford’s claims were unpatentable for lack of written description, and remanded for further …

Generic Examples of Claimed Compounds Do Not Satisfy Enablement Requirement

On June 21, 2017, In Storer v. Clark, the Federal Circuit affirmed a Patent Trial and Appeal Board’s interference decision, which awarded priority to Clark’s pending application (…

PTAB Appellants Must Pay USPTO’s Attorneys’ Fees Regardless of Outcome of Appeal

In Nantkwest v. Matal, the Federal Circuit reversed the Eastern District of Virginia’s denial of the USPTO’s request for attorneys’ fees in connection with Nantkwest’…

Federal Circuit says Cleveland Clinic Diagnostic Patents Ineligible Under § 101

The Cleveland Clinic’s diagnostic or “testing” patents at issue dealt with a process by which an enzyme was measured and correlated against known levels of the …

CAFC Affirms Board’s Claim Construction and Holds Waterproofing Patent Invalid

Outdry appealed from a Board determination that its patent directed to waterproofing leather was invalid as obvious in an inter partes review (IPR) proceeding. Outdry challenged the …

Specific Personal Jurisdiction Requires ‘Substantial’ not ‘Attenuated’ Forum Contacts

NexLearn sued Allen in district court, alleging patent infringement and breach of contract, based on a nondisclosure agreement (NDA) that allowed Allen to use a trial version …